Nichols Institute Diag. v. Scantibodies Clin. Lab.

• Decision Date: 11 September 2002
• Docket Number: No. CIV. 02CV0046-B (LAB).,CIV. 02CV0046-B (LAB).
• Citation: 218 F.Supp.2d 1243
• Court: U.S. District Court — Southern District of California
• Parties: NICHOLS INSTITUTE DIAGNOSTICS, INC., a California Corporation, Plaintiff, v. SCANTIBODIES CLINICAL LABORATORY, INC., a California Corporation; Scantibodies Laboratory, Inc., a California Corporation; and Does 1 through 10, Defendants.

Page 1243

218 F.Supp.2d 1243

NICHOLS INSTITUTE DIAGNOSTICS, INC., a California Corporation, Plaintiff, v. SCANTIBODIES CLINICAL LABORATORY, INC., a California Corporation; Scantibodies Laboratory, Inc., a California Corporation; and Does 1 through 10, Defendants.

No. CIV. 02CV0046-B (LAB).

United States District Court, S.D. California.

September 11, 2002.

Douglas E. Olson, Vicki Gee Norton, Brobeck, Phlegar and Harrison, San Diego, CA, for plaintiff.

Russell Alan Gold, Luce, Forward, Hamilton and Scripps, David C. Doyle, Shannon Marie Dailey, Morrison and Foerster, San Diego, CA, for defendants.

ORDER DENYING AS MOOT DEFENDANTS' MOTION FOR SUMMARY JUDGMENT PURSUANT TO 35 U.S.C. § 102(f) FOR NONJOINDER OF CO-INVENTOR, DENYING REQUEST FOR STAY, AND ORDERING PLAINTIFF TO FILE AMENDED COMPLAINT

BREWSTER, Senior District Judge.

I. INTRODUCTION

Before the Court is Defendants' Motion for Summary Judgment for Non-Joinder of Co-Inventor pursuant to 35 U.S.C. § 102(f), which came on for hearing before the Court on August 26, 2002. For the reasons below, the Court denies Defendants' motion and orders Plaintiff to file an amended complaint.

II. BACKGROUND

Nichols Institute Diagnostics, Inc. ("Nichols") is the sole licensee of U.S. Patent No. 6,030,790 ("the '790 Patent"). In its complaint, Nichols states a single claim for infringement of the '790 Patent against Scantibodies Clinical Laboratory, Inc. and Scantibodies Laboratory, Inc. ("Scantibodies" or "Defendants").

The subject matter of the '790 Patent was also the subject matter of international patent application number WO 96/10041 ("the international application"), which was filed under the Patent Cooperation Treaty ("PCT"). The PCT provides a procedure for filing a patent application on the international level so that subsequent applications in different nations can claim priority based on the filing date for the international application. 4 Donald S. Chisum, Chisum on Patents § 14.02[4]. However, the PCT "does not alter the substantive requirements of patentability" in other countries. Id. Subsequent applications in the United States are referred to as the "national stage" of the international application. 37 C.F.R. § 1.491 (2001).

The '790 Patent is the national stage of international application number WO 96/10041. As is required by the PCT, the '790 application covers the same subject matter as its international counterpart. However, whereas the international application designates as inventors four individuals (Drs. Wolf-Georg Forssmann, Knut Adermann, Dieter Hock, and Marcus Mägerlein), the '790 Patent designates only three (Drs. Adermann, Hock, and Mägerlein). The parties agree that Dr. Wolf-Georg Forssmann is, in fact, a coinventor of the subject matter of the '790 Patent, and that his name was omitted in the inventorship designation.

Defendants filed the instant summary judgment motion on May 16, 2002, contending that the '790 Patent was invalid under 35 U.S.C. § 102(f)¹ for non-joinder of a co-inventor. While the motion was pending, on July 1, 2002, Pharis Biotec GmbH, assignee of the '790 Patent, along with the named inventors, Drs. Adermann, Hock, and Mägerlein, and the omitted inventor, Dr. Forssmann, applied to the United States Patent and Trademark Office for correction of inventorship pursuant to 35 U.S.C. § 256² and 37 C.F.R § 1.324(a),³ seeking to add Dr. Forssmann to the '790 Patent.⁴ They provided the PTO with copies of the complaint in this action, the answer, Scantibodies' Notice of Motion and Motion for Summary Judgment for Nonjoinder of Co-Inventor, and Scantibodies' Memorandum of Points and Authorities in Support of Motion for Summary Judgment. (Dec. James T. Carmichael Supp. Pl.'s Opp. Mot. Summ. J., Ex. 1.)

On July 9, 2002, during the parties' early neutral evaluation conference pursuant to Rule 26(f), Federal Rules of Civil Procedure, Nichols revealed that there was a pending application for a correction certificate. On July 15th and 16th Scantibodies sent the PTO letters objecting to the certificate's issuance. (Dec. David C. Doyle Supp. Reply Exs. F, G.) Over Scantibodies' strenuous objections that the PTO lacked authority to issue the correction certificate while the nonjoinder issue was before this Court, the PTO approved the application. The Certificate of Correction adding Dr. Forssmann to the '790 Patent was published on August 6, 2002. (Dec. Vicki G. Norton Supp. Pl.'s Sur-reply in Opp. Ex. 10.)

III. STANDARD OF LAW

A. Motion for Summary Judgment

Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment is appropriate if the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). When the facts controlling the application of a rule of law are undisputed, the application raises a question of law for the court. Delbon Radiology v. Turlock Diagnostic Ctr., 839 F.Supp. 1388, 1391 (E.D.Cal.1993). Summary judgment is appropriate in such cases. Id. Such purely legal issues appropriate for resolution in a motion for summary judgment include the interpretation of a statute or regulation. Edwards v. Aguillard, 482 U.S. 578, 581-582, 107 S.Ct. 2573, 96 L.Ed.2d 510 (1987).

IV. MOTION FOR SUMMARY JUDGMENT FOR NONJOINDER OF CO-INVENTOR

A. Arguments

In their first summary judgment brief, which was filed before the parties to the patent applied for a Certificate of Correction in the PTO, Scantibodies sought summary judgment pursuant to 35 U.S.C. § 102(f), under which a patent is rendered invalid for omission of a co-inventor, arguing that the '790 Patent was invalid for failure to designate Dr. Forssmann as a co-inventor. See Pannu v. Iolab Corp., 155 F.3d 1344, 1350 (Fed.Cir.1998). Scantibodies additionally requested that should the Court grant their motion, and should Nichols choose to correct the error under 35 U.S.C. § 256, that Nichols be required to move for correction in this Court, and that the Court stay the rest of the infringement action pending resolution of the motion for correction.

Nichols, in its opposition brief, which was filed after the parties to the '790 Patent applied for correction in the PTO, conceded that Dr. Forssmann is a co-inventor of the '709 Patent, but contended that Defendants' motion under § 102(f) was mooted by the PTO's issuance of a Certificate of Correction adding him to the patent.

In the subsequent volley of briefs,⁵ Scantibodies and Nichols have hotly contested the propriety of the parties to the patent⁶ seeking correction from the PTO during pendency of a motion in which the issue of the patent's invalidity for nonjoinder of a co-inventor under § 102(f) is raised. Scantibodies argues that § 256 does not permit parties to seek relief from the PTO when the nonjoinder issue has been raised before a district court. Instead, urges Scantibodies, correction for nonjoinder under § 256 is the exclusive province of the district court where the nonjoinder issue was first raised. Based on this reading of § 256, Scantibodies contends that the Certificate of Correction is invalid and that the Court should sanction Nichols for "ex parte forum shopping" under Rule 37(c)(1) of the Federal Rules of Civil Procedure.

Of particular concern to Scantibodies is the difference in the scope of correction proceedings before the PTO and a motion for correction in a district court. Under § 256, correction of a patent is permissible only if the omitted inventor acted without deceptive intent. Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1553 (Fed.Cir. 1997). Although both the PTO and the district court are under the same statutory obligation to determine a lack of deceptive intent, id., the PTO's procedures for determining that issue are far more limited than those available in a district court. To show lack of deceptive intent, the PTO requires only that the omitted inventor submit a pro forma declaration stating that the error of nonjoinder was committed without deceptive intent. U.S. Patent and Trademark Office, U.S. Dep't of Commerce, Manual of Patent Examining Procedure § 1481 (8th ed.2001). Indeed, in a correction proceeding before the PTO, "the examiner will not make any comment as to whether or not it appears that there was in fact deceptive intention" and must find a lack of deception so long as the omitted inventor provides the required statement. Id. (emphasis in original). Nor does the PTO have a procedure for allowing alleged infringers to participate in correction proceedings and present evidence of the omitted inventor's deceptive intent. See id.; 37 C.F.R. § 1.324(b). Instead, as long as there is no dispute among all the inventors, omitted inventors, and assignees, if any, the patent's correction by the PTO is essentially a foregone conclusion. Such was the case in the correction of the '790 Patent.

By contrast, district courts presented with motions for correction under § 256 are required to take evidence, have a "hearing," see 35 U.S.C. § 256, and determine whether, as a matter of fact, the omitted inventor acted with deceptive intent. See Perseptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1317-1318 (Fed.Cir.2000) (discussing procedure followed by district court for correction of inventorship under § 256). District courts are empowered to adjudicate contested motions for correction brought by the parties to a patent, see MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570 (Fed.Cir.1989), can order correction over objection of any of the parties to the patent, Iowa State Univ. Research Foundation, Inc. v. Sperry Rand Corp., 444 F.2d 406, 408 (4th Cir.1971), cited with approval by Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1553 (Fed.Cir.1997), and have the authority to permit alleged infringers to participate in correction...